Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 11/12/2017

BRISTOWS LLP

100 Victoria Embankment

London EC4Y 0DH

REINO UNIDO

Application No:	017128505
Your reference:	428/PJ/11952-0070
Trade mark:	TONIC
Mark type:	Word mark
Applicant:	Vice Media LLC 49 South 2nd Street Brooklyn New York 11211 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 31/08/2016 pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR because it found that the trade mark applied for is descriptive and devoid of any distinctive character, for the reasons set out in the attached letter.

Following a request for a two month extension of time, the applicant submitted its observations on 31/10/2017. These may be summarised as follows.

• The subject mark ‘TONIC’ is comprised of an ordinary English dictionary word with has a number of known meanings. However, the term has no established meaning in relation to the contested goods in Class 30, and that use of the mark in the context of such goods would be seen as unusual by the average consumer, and would therefore suggest that the mark is being used as an origin-indicator.

• There is no prohibition to the registration of ordinary dictionary words as trade marks. Thus the existence of a dictionary definition is not in and of itself decisive of the question as to whether a mark is registerable.

Pursuant to Article 94 EUTMR, it is up to the Office to take a decision based on reasons or evidence on which the applicant has had an opportunity to present its comments.

After giving due consideration to the applicant’s arguments, the Office has decided to maintain the objection.

Under Article 7(1)(c) EUTMR, ‘trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service’ are not to be registered.

It is settled case-law that each of the grounds for refusal to register listed in Article 7(1) EUTMR is independent and requires separate examination. Moreover, it is appropriate to interpret those grounds for refusal in the light of the general interest underlying each of them. The general interest to be taken into consideration must reflect different considerations according to the ground for refusal in question (16/09/2004, C‑329/02 P, SAT/2, EU:C:2004:532, § 25).

By prohibiting the registration as European Union trade marks of the signs and indications to which it refers, Article 7(1)(c) EUTMR

pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks.

(23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 31).

‘The signs and indications referred to in Article 7(1)(c) [EUTMR] are those which may serve in normal usage from the point of view of the target public to designate, either directly or by reference to one of their essential characteristics, the goods or service in respect of which registration is sought’ (26/11/2003, T‑222/02, Robotunits, EU:T:2003:315, § 34).

In its submissions the applicant has argued that the subject mark is comprised of an ordinary English dictionary word with has a number of known meanings. However, the term has no established meaning in relation to the contested goods in Class 30. And that use of the mark ‘TONIC’ in the context of such goods would be seen as unusual by the average consumer, and would therefore suggest that the mark is being used as an origin-indicator. Furthermore, there is no prohibition to the registration of ordinary dictionary words as trade marks. Thus the existence of a dictionary definition is not in and of itself decisive of the question as to whether a mark is registerable.

The Office has noted the applicant’s submissions. However, it must be advised that, when assessing a mark, the Office must consider it, not in its strictest grammatical sense, but how it would represent itself to the public at large who are to look at it in relation to the goods for which registration is being sought, and form an opinion of what it connotes.

The Office is of the opinion that when taken as a whole, the meaning of the term ‘TONIC’ will be clear to any English-speaking consumer who will immediately and without any difficulty establish a direct and specific link between the mark and the specified goods for which registration is being sought, namely that, as explained in the initial notification, they are goods which will make the user feel stronger, more cheerful or more enthusiastic. It is, therefore, the Office’s view that the term ‘TONIC’ is readily intelligible when taken in conjunction with the specified goods applied for, and viewed by the relevant consumer, who will see the phrase ‘TONIC’ merely as a characteristic of the goods being provided rather than an indication of trade origin.

As regards to the applicant’s arguments regarding the various dictionary meanings of the term TONIC, the Office would advise that for a trade mark to be refused registration under Article 7(1) CTMR,

it is not necessary that the signs and indications composing the mark that are referred to in that Article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned.

(23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32, emphasis added.)

It is irrelevant whether the characteristics of the goods or services which may be the subject of the description are commercially essential or merely ancillary. The wording of Article 7(1)(c) EUTMR does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists. In fact, in the light of the public interest underlying the provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever of its own goods, irrespective of how significant the characteristic may be commercially (12/02/2004, C-363/99, Postkantoor, EU:C:2004:86, § 102).

Given that the mark has a clear descriptive meaning in relation to the goods and services applied for, the impact of the mark on the relevant public will be primarily descriptive in nature, thus eclipsing any impression that the mark could indicate a trade origin. Accordingly, it also has to be rejected under Article 7(1)(b) EUTMR.

The Office has noted the outstanding classification objection relating to the term “staple foods, namely oil”, but would advise that the correct reclassification of this term would not change the outcome of this decision.

The Office considers further argumentation superfluous. It derives from all the foregoing that the applicant has not succeeded in convincing the Office that ‘TONIC’ will be perceived by the consumers as pointing to the commercial origin of the goods at issue

For the reasons mentioned above, and in the previous notifications, the term ‘TONIC’ does not possess any actual distinctive character for the goods pursuant to Article 7(1)(c) and (b) EUTMR and in combination with Article 7(2), and is therefore unable function as a trade mark in the market place, i.e. it fails to distinguish the goods of the applicant from those of other undertakings. The relevant public cannot, in the absence of prior knowledge, perceive it other than in its descriptive sense. The applicant has not claimed that its mark has acquired distinctiveness through the use that has been made of it (Article 7(3) EUTMR).

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, the application for European Union trade mark No 17 128 505 is hereby rejected for the following goods:

Class 30 Staple foods, namely, sauces and other condiments, spices, salt, crackers, salty snack food, multi-grain snack or meal bars, energy bars, cereal products, bread, rolls, buns, bread crumbs, oil, vinegar, mustard, pasta, rice, quinoa, pastry, confectionary, baking powder, baked goods mixes, candy, coffee.

The application may proceed for the remaining goods and services, namely:

Class 28 Fitness equipment.

.

Class 41 Entertainment services in the nature of ongoing audio-visual programs provided via television, satellite and digital audio and video transmission over wired and wireless networks featuring subjects of general human interest.

According to Article 67 EUTMR, you have a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

Andrew CARTER